India: Dabur´s Design Contest In Hair Oil Packaging

Aggrieved by the dismissal of an
application filed under Order 39 Rules 1 and 2 CPC, Dabur India
Limited filed an appeal to the decision of the Ld. Single Judge of
the Delhi High Court, in Dabur India Ltd. v. Amit Jain
& Anr. {2009 (39) PTC 104 (Del.)}. Dabur claiming to
be the fourth largest fast moving consumer goods (FMCG) company in
India, and that they were in trade since 1884, filed this appeal in
pursuance to the design registration in the packaging of its hair
oil for the bottle and cap.

Among its various products, was
being marketed as Dabur Amla Hair Oil. Dabur stated that besides
vast sales in India, they had been exporting Dabur Amla Hair Oil to
various countries since 1884. Marketed in plastic bottles shaped
with a semi-circular shoulder with curvaceous back and front panel
tapering into each other, The Design being unique, aesthetically
novel and original was also registered under the Designs Act, 2000.
The green cap used in relation to the bottle also had subsisting
registration.

Dabur averred that the bottle was
introduced for marketing its hair oil in the year 2000, prior to
which Dabur Hair Oil was marketed in a glass bottles whose design
was also registered. Dabur averred that substantial expenditure on
advertisement and promotion of the Dabur Amla Hair Oil had been
made. On account of prior adoption, long and continuous use,
extensive advertising campaign and marketing network, enormous
sales, Dabur had acquired goodwill and reputation in the market and
the packaging came to be identified and associated exclusively with
Dabur's goods among consumers belonging both to rural and
semi-urban areas and townships. Dabur placed on record annual sales
figures of the Dabur Amla Hair Oil and Dabur Jasmine Hair Oil to
corroborate their ground.

In November 2005 Dabur found Amit
Jain, the sole proprietor of M/s. Vinayak Industries, Delhi to be
engaged in the manufacture and sale of Plus Jasmine Hair Oil and
Tushar Amla Hair Oil in bottles and labels deceptively similar to
that of Dabur'. The filed a suit in pursuance of alleging
infringement action and moved to seek an interim injunction. A
compromise was arrived at between the parties. The compromise
included admissions made and undertaking given by the Defendants,
acknowledging the validity of the Design Registration and undertook
not to use the impugned trade dress, label, etc.

Dabur consequently learnt that Amit
Jain had again started manufacturing and selling Plush Amla Hair
Oil in plastic bottles which according to them was obvious and
fraudulent infringement of the DABUR Amla Hair Oil and cap design.
Accordingly, a fresh Suit was filed by Dabur seeking a decree of
permanent injunction, restraining infringement and passing off of
the design of Dabur .The Single Judge opined that a case of ex
parte ad interim injunction had been made out and an advocate as
Local Commissioner to seize the infringing goods/bottles as well as
moulds, make an inventory thereof and release the same to Amit Jain
on superdari.

An application seeking the vacation
of the ex parte ad interim injunction order was filed, which was
vacated. . The learned Single Judge after examining samples of
bottles used by Dabur as well as by Amit Jain concluded that the
bottle used by Amit Jain were of different dimension or shape from
that of Dabur's. The shape of the bottle used by Dabur was
also not termed to be new. An appeal was filed to the order but the
SLP was also dismissed by the Supreme Court.

The counsel for Dabur submitted that
the registration in respect of both the bottle and the cap in their
favour conferred the statutory right to exclusive use of the design
in terms of Section 11 of the Designs Act, 2000. They also
propounded that fraudulent imitation of the design constituted
infringement under Section 22 of the Act, and an injunction should
follow in terms of Section 22 (1A) and 22 (1B) of the Act.

The principle of estoppel was also
brought to the fore to contend that the undertaking given by Amit
Jain in the earlier suit before this Court would estop him from
using the said design either by himself or through any proprietary
concern of his like M/s. V.N.Cosmetics. Amit Jain was said to be
precluded from imitating the said design and exploiting it for
commercial purposes. Amit Jain averred that he had also obtained
the registration of its bottle design on 9th November 2006, which
was countered by Dabur by pointing out that cancellation of the
said registration in terms of the Act and that the subsequent
design registration is in any event not a defence to an
infringement of a prior registered design.

On behalf of Amit Jain, it was
submitted that the bottles now being used by it for which an
injunction is sought by Dabur did not form the subject matter of
the earlier Suit. The seizures made by the Local Commissioner in
the instant case is not of the infringing bottles but of a new
bottle being used by Amit Jain which is different from the one
which forms the subject matter of the earlier Suit. It was
contended that the design of the bottle or the cap of used by Dabur
was neither new nor novel, and therefore was not entitled to be
granted any registration under the Act. It was contended that the
cap of the bottle did not have its own commercial identity in the
market and therefore did not qualify to be an article under the
Designs Act. It was contended that the right of a Plaintiff in a
registered design extended only to the extent of novelty claimed in
a registered design. Moreover the registration of Dabur's
bottles was said to be devoid of any special unique feature and
therefore no case could be said to have been made out for
infringement.

The Court stated that one of the
first questions to be considered was whether the undertaking given
by Amit Jain in the earlier Suit act as an estoppel and restraining
them from using bottles and caps deceptively similar to that of
Dabur's. Referring to precedents in the matter, the Court
declared that if Amit Jain' plea were to be accepted, the
same would render meaningless the undertaking given earlier by them
to this Court whereby he accepted the novelty of the
Dabur's design.

The law in regard to similarity
which constitutes infringement was also discussed by the Court. The
Court examining note of the bottles and caps in contention was of
the prima facie view that the bottles and caps used by Amit Jain
and co-defendants were deceptively similar to that of Dabur. The
plea of an absence of sufficient novelty was also answered, to
which the Court stated that the plea was no longer available in
view of the compromise order arrived at in the earlier suit.

For the purpose of considering the
plea of Dabur for grant of an interim injunction pending the final
determination of the issue in the suit, the Court opined that it
was not necessary to take a final view on the plea of Amit Jain
that the registration granted of the design in favour of the
Appellant was invalid. The Court stated that this is would be taken
up at the statutory proceedings instituted by Amit Jain raising the
said for challenge.

The Court opined that the learned
Single Judge, seemed to have erred in concluding that
Dabur' design was devoid of novelty or being new. The Court
opined that the compromise order in the earlier Suit could not be
diluted or ignored by this Court particularly when an undertaking
expressly recognizing the validity of the design was endorsed. The
Court stated that there was no occasion for the Single Judge to
reopen the issue which had been decided by the earlier Suit. Also
it was stated that no occasion for the learned Single Judge to give
a finding that the design of Amit Jain's bottle was
different from the registered design of Dabur in question. The mere
fact of a subsequent registration in favour of Amit Jain was stated
not to be a not a defence in an action for infringement.

It was also contended by Amit Jain
that the bottles seized by the Local Commissioner in the instant
case were different from the bottles in respect of which the
compromise was recorded in the earlier Suit. In view of the report
of the Commissioner having been placed on record, the Court noted
that the same had not been objected to; the Court reiterated its
satisfaction of a prima facie case having been made out. This case
was said to be beyond one where the award of damages would have
been sufficient to compensate Dabur for the infringement of its
registered designs. The Court stated that an element of loss of
goodwill was ingrained in allowing the infringement to continue and
rejected the plea.

Amit Jain submitted that the very
design in respect of which the registration had been granted in
favour of Dabur was already in public domain and had been published
earlier. Reliance was placed upon Designs registered at the US
Patent Office to contend that there was no novelty as far as
Dabur' designs were concerned. The Court noted that
reliance upon a design registered in the US could not satisfy the
requirements of Section 19 of the present Act which specifies the
ground on which cancellation can be granted.

The Court also noted that in absence
of a definition for "publication", mere
publication of design specifications, drawings and/or
demonstrations by the Patent Office of any foreign country, in
connection with an application for registration, would not, in
itself, amount to publication that would render a design registered
in India liable to cancellation. The Court opined that registration
in the U.S in respect of similar bottles and caps cannot come in
the way of Dabur's seeking an order restraining Amit Jain
from infringing its registered design. In this light, the
injunction was restored until the disposal of the Suit and costs
amounting to Rs.20, 000/- were ordered to be paid.

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